The two products that the plaintiff is suing over are “BLENDERS PRIDE” and “IMPERIAL BLUE,” both of which have registered trademarks in Classes 34 and 33 of the Trademark Classification Categories, respectively. From 1995, the plaintiff has used the “BLENDERS PRIDE” brand, and since 1997, “IMPERIAL BLUE.”
On the other hand, it was alleged that the Defendant had been using the disputed “CASINOS PRIDE” mark from 02.08.2017, which was confusingly similar to the mark used by the Plaintiff.
Additionally, it was claimed that the products of the Respondent and the Plaintiff are from the same market sector-Indian Manufactured Foreign Liquor, or “IMFL”-and are sold in the same locations.
The Claimant filed an opposition to the Defendant’s application to register the challenged trademark “CASINOS PRIDE” under Class 33.
With respect to the facts, the two issues raised were:
- Whether Defendant’s impugned marks infringe the Plaintiff’s registered trademarks?
- Whether a case of passing off can be made against the defendant?
Arguments
The plaintiff claimed that the defendant willfully violated two of the plaintiff’s registered trademarks, “BLENDERS PRIDE” and “IMPERIAL BLUE”.
The Plaintiff claimed that the Delhi High Court and the Madras High Court recognised “BLENDERS PRIDE” and “IMPERIAL BLUE” as “well-known marks” within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999, and claimed that both marks are so closely associated with the Plaintiff that they have become source identifiers. The Plaintiff cited two cases, Austin Nichols & Co. v. Arvind Behl 2006 (32) PTC 133 (Del) and Rhizome Distilleries v. UOI 2016 (65) PTC 132 (Mad).
The Plaintiff informed the Court that the Defendant intentionally deviated from the mark it was attempting to register by using a blue background in the packaging in which Plaintiff was marketing its product in an effort to “get as close” to the Plaintiff’s mark (with a black background). The Plaintiff asserted that the term “PRIDE” in “BLENDERS PRIDE” is a distinguishing feature and that the Defendant’s use of it would violate the Plaintiff’s reputation for the brand and result in the Plaintiff’s irreparable damage in order to prove the claim of infringement. As “PRIDE” is not a term that describes alcoholic beverages, the plaintiff claimed that no one was required to use it when referring to such products.
Instead, the defendant refuted the claim of trademark infringement, asserting that the defendant(s) had legitimately and honestly created and adopted the “CASINO PRIDE” mark on May 25, 2016, and that they had been using it publicly since August 2, 2017. In order to argue that the Plaintiff cannot assert exclusivity in regard to a portion of its composite mark “BLENDERS PRIDE,” the Defendant used Section 17 of the Act. The Defendant also informed the Court that the Plaintiff attempted to register the mark “PRIDE,” but was unsuccessful in doing so, and claimed that the Plaintiff was indirectly attempting to achieve exclusivity with respect to the “PRIDE” mark by filing this lawsuit.
The defendant further emphasised how many manufacturers were using the phrase “PRIDE,” which has since spread throughout the industry. In light of this, “PRIDE” cannot be the primary component of the Plaintiff’s “BLENDERS PRIDE” mark. Additionally, the defendant claimed that “PRIDE” violates publici juris since it is “generic, descriptive, laudatory, or common” and has not taken on a new meaning in the eyes of the general public. Due to the use of “PRIDE” in “CASINO PRIDE,” the Defendant claimed that no infringement had occurred.
Findings
The issue of infringement of the Plaintiff’s registered word mark “BLENDERS PRIDE” was first addressed by the court. The Court ruled that the Plaintiff cannot assert exclusive rights to the mark’s “PRIDE” component. The word “PRIDE” is laudatory in nature, according to the Court, because its etymology refers to the product’s quality.
The Court said that it was a term of widespread usage and did not set the Plaintiff’s product apart from those of other producers. The court ruled that the plaintiff would have the right to use the BLENDERS PRIDE mark in its entirety under Section 17(1). Section 17(2)(b) would apply to any claim of exclusivity over the “PRIDE” portion of the mark since it lacks distinctiveness.
The court found that the word “PRIDE” in the “BLENDERS PRIDE” mark is manifestly generic, common, and laudatory, and that “anyone’s wish to utilise [PRIDE] as a component of the trade name of the product is fully reasonable.” The dominating portion of the mark is the lone exception. By taking into account the perception of the person purchasing the goods or using the service, the Court applied the “plain glance” test to decide whether “PRIDE” is a dominating component of the mark “BLENDERS PRIDE.” The Court observed that there is no similarity between the “BLENDERS PRIDE” device mark of the plaintiff and the “CASINO PRIDE” device mark of the defendant based on a plain view of the marks.
The Court held that since the intent to deceive consumers to believe that “CASINOS PRIDE” is a cheaper product from that of the Plaintiff’s brewery is apparent, the Court would presume that the intention is successful. As a result, the Court held the Defendant liable for passing off of its product as that of the Plaintiff.
Conclusion
The basis for the petitioners’ claim that their use of the word “PRIDE” constitutes a “dominant portion” of the “BLENDERS PRIDE” mark is their claim that they have an exclusive right to that word. In this case, the Court correctly interpreted Section 17 of the Act and the anti-dissection rule to conclude that the “BLENDERS PRIDE” must be taken into account as a whole and denied any monopoly on “PRIDE.” The Court made the aforementioned statement on the theory that the consumer would not break it up into parts. While there was no prima facie case because the names were distinct, the labels could be seen, and there was no deceptive similarity to be noticed, the plaintiff’s case regarding the infringement of the “IMPERIOR BLUE” mark was much weaker. The Court rightly noted that as the individual elements in the Plaintiff’s registered mark were not registered, they did not acquire any secondary meaning, nor could they be associated with the product. Therefore, no case of infringement could be made out.
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